Madrid Protocol: Everything You Need to Know

The Madrid Protocol is a treaty that gives U.S.-based corporations a worldwide alternative to regional or local trademark registration systems. 7 min read

What is the Madrid Protocol?

The Madrid Protocol is a treaty that gives U.S.-based corporations a worldwide alternative to regional or local trademark registration systems. The protocol allows a trademark to be registered in multiple countries beginning from the application's original submission date at the local trademark office.

The body of legislation governing international trademark laws is known as the Madrid System for the International Registration of Marks. The system is governed by the following treaties:

The Madrid Agreement, which was completed in 1891 and revised in multiple countries from 1900 to 1979. The current version of the treaty was completed in 1996.

The Protocol relating to the Madrid Agreement, which was completed in 1989. This protocol tries to make the Madrid system more compatible and flexible with U.S. legislation in participating countries. Those countries participating in the Madrid system are known together as Contracting Parties.

The Madrid Protocol protects trademarks in other countries with an international registration system. In most countries, including the U.S., a trademark registration must be renewed every 10 years. With the Madrid Protocol, there are special rules you need to follow. Not following these rules could mean losing your trademark protection or International Registration.

Applications under the Madrid Protocol must be linked to the registration or application for the trademark on file at the applicant's home trademark office. This link allows the applicant's home office to make sure the international application obeys the "base" registration or application. The home office then sends all documents to Geneva, Switzerland, and the International Bureau of the World Intellectual Property Office (WIPO).

WIPO then checks the basic filing requirements and enters the trademark into the international trademark register. After that, application copies are sent to trademark offices in the countries noted on the application. These countries will have 18 months to refuse or approve the application based on their own standards. If, after all this, the registration requirements are met, the mark is published by the International Bureau in the International Gazette. A single international registration is issued, which is renewable every 10 years.

Why is the Madrid Protocol Important?

The Madrid Protocol, introduced in 1996, is an amendment to the original Madrid Agreement. The United States joined the Madrid Protocol in 2003. The European Union joined in 2004. After that, the Madrid Protocol became an attractive option for other countries.

Given its widespread appeal, the Madrid Protocol is the method of choice for international trademark registration. There is a certain freedom to the new protocol that wasn't allowed in the original Agreement. The Protocol also recently adopted Spanish as a language option in the filing process. This makes the protocol a great option for every Spanish-speaking nation on the globe.

On the international commerce and trade stage, trademarks are important because they brand the services or products they represent. With the Madrid Protocol, countries across the world can benefit from commercial exchanges and trade, resulting in improved economies.

The protections offered by the Madrid Protocol are the same as those provided by a designated country's national registration process. The benefit, however, lies in the centralized nature of the filing system. It provides considerable benefits in cost and convenience over having separate trademark application filing systems in each country. Renewals are also handled through the International Bureau's single filing system.

Plus, the Madrid Protocol's strict 18-month review timeframe is quicker than some countries that would normally have trademark examination processes lasting several years.

Disadvantages of the Madrid Protocol

A direct filing system like the Madrid Protocol has its downsides. An increase in international trademarks can lead to potential refusals and conflicts. This could result in the need for more local counsel to handle prosecution cases and objections. With that comes fees that can quickly exceed any cost savings the Protocol offers.

Another proposed drawback to the Madrid Protocol is a central attack. During the first five years, an international registration from the United States depends on the U.S. base application or registration. If at any time during those five years the application or registration is withdrawn, refused, restricted, or canceled, the International Bureau will cancel it.

During that initial five-year period, third parties can attack these registrations as a way of trying to break down the whole international registration. If successful, the holder can apply to move from an international registration to a mix of regional or national registrations, but that will eliminate any cost savings.

Expenses

International Registration fees include the basic fee, which increases if the application includes more than three classes of services or goods or if the application is in color. Currently, the basic fee for International Registration is $465. There is also an additional fee of $50 per class over three. Individual fees do vary by country.

Application fees also include a service fee to the receiving office as well as international fees. Fees are stated in Swiss Francs, meaning that the total cost will depend on the exchange rate. If you're filing in the USPTO, the home office's service fees are $100 per class or $150 if the application is based on more than one U.S. registration or application. International fees must be paid at the same time.

International fees tend to range from $725 for a black-and-white mark to $19,750 for a full-color design mark designated in all countries.

Overall, though, expenses for anyone pursuing the Madrid Protocol are typically less than filing fees for those individually submitted to each foreign office.

Legal Action

The Madrid Protocol isn't clear on how trademark disputes should be handled in litigation. On the one hand, trademark infringement should be litigated in the foreign court system where the violation occurred. On the other, the United States can assume legal issues under certain conditions, as long as there's an attempt to honor the court system of the country in which the violation took place. In addition, a U.S. court can award damages for violations occurring in other countries.

What Could Happen When You Use the Madrid Protocol?

An applicant seeking to file under the Madrid Protocol must be a natural person or legal entity with a connection to one of the countries (Contracting Parties) involved in the Agreement or Protocol. This connection can be proven either through nationality or residence.

The applicant should choose one or more countries or Contracting Parties in which the trademark protection is being sought. Applications can be filed in English, Spanish, or French. This is regardless of the office of origin.

When you file an international application, you'll have to pay a basic fee that comes to about 10 percent of the typical amount for international applications filed in other countries of origin. Additional costs include a supplementary fee for each service or good beyond the first three. There is also an individual fee for each designated Contracting Party.

If the application makes it through without being withdrawn or refused, the trademark is protected from the date of registration. This international registration is good for 10 years, after which point it can be renewed as long as all fees are paid.

While the Madrid Protocol means having to abide by all local laws, including consistent usage in each country, it isn't necessarily a drawback. However, the use requirement can prevent getting a trademark in advance for future use.

Trademark Renewal

In the United States, as in most countries, you must renew your trademark registration every 10 years. However, if you get your trademark through the Madrid Protocol, there are some special rules by which you need to abide. Otherwise, you could lose your U.S. trademark protection or your International Registration.

A U.S. trademark registration under the Madrid Protocol is called an "extension of protection" rather than a registration. Some U.S. trademarks issued under the Madrid Protocol may also be called 66(a) registrations or applications, which reference the U.S. Trademark Act.

When renewing your U.S.-based registration under the Madrid Protocol, you must meet both U.S. requirements and the World Intellectual Property Organization (WIPO) renewal requirements independently. If you're unable to complete them both, you lose your trademark.

To renew your International Registration under the Madrid Protocol, submit your renewal papers and fees every 10 years from your filing date with WIPO. You will also need to file an affidavit every 10 years with the USPTO stating that your trademark is still in use in the U.S.

To maintain your Madrid-based U.S. trademark, file the affidavit on the day nine years and six months after the U.S. registration was issued. If you wait until the final three months to renew, you'll be charged an extra fee. This gives you a full nine-month window to file the affidavit, but that's still half of the non-Madrid U.S. trademark registration process.

Frequently Asked Questions

Which countries offer international registration under the Madrid Protocol?

International registration under the Madrid Protocol can only be obtained from participating countries and regions. Many individual countries participate, but there are three main regions designated under the Protocol as International Registrations. The first is Benelux, which comprises The Netherlands, Luxembourg, and Belgium. The second is the European Union except for Malta, which is not currently part of the system. The third is the African Intellectual Property Organization, which consists of several African countries including Chad, The Republic of Congo, Mali, and others.

Other participating countries are found in North America, Latin America, Asia, and the Middle East.

Who can apply for an international trademark registration under the Madrid Protocol?

Applicants can apply as long as they have a connection with a member region or country and have a trademark registration or application with that location.

What kind of marks are accepted?

Any type of trademark that is considered acceptable in member countries are accepted. These include several classes of services and goods.

How do I apply?

An intellectual property lawyer can handle the application procedure for you. The application must be submitted to the home trademark office.

Can I get a partial international registration?

Yes, it is possible to get an international trademark registration either totally or in part. This process typically involves splitting the mark by regions or countries.

Can the examination period for International Registration be extended?

The International Registration examination period has an 18-month limit, but this period may be extended through five years under certain circumstances. International Registration provides protection rights to both native and foreign applicants, which lasts 10 years.

Where can I learn more about the Madrid Protocol?

In the United States, implementation guides, regulations, and legislation information about the Madrid Protocol are available to the public on the United States Patent and Trademark Office (USPTO) website.

Given that the application and registration process is a complex one, you can also contact a lawyer to help you understand and complete the process. If you're having difficulties or just want a trademark attorney on your side, post your question in UpCounsel's marketplace. Our lawyers come from top law schools such as Yale Law and Harvard Law and have an average of 14 years of legal experience.

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